The Complainant is California Milk Processor Board of San Clemente, California, United States of America (“United States” or “U.S.”), represented by Knox, Lemmon, Anapolsky, LLP, United States.
The Respondent is Domain Admin, RegistrarAds, Inc. of Vancouver, Washington, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2017. On February 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2017.
The Center appointed Evan D. Brown, Michelle Brownlee and John C McElwaine as panelists in this matter on April 11, 2017. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant exists to promote the consumption of milk through marketing, advertising, promotion and public relations. It owns numerous trademark registrations in the United States for variations of the mark GOT MILK?, including U.S. Reg. No. 1,903,870 (issued July 4, 1995). According to this trademark registration, the Complainant first used the mark in interstate commerce at least as early as November 15, 1993. The Complainant has also developed strong rights in its GOT MILK? mark through widespread use in the marketplace for more than two decades.
The disputed domain name was registered in 2002 and for many years, the owner of the disputed domain name used it to display a website featuring content relating to Christian living and Bible study. The Complainant indicates that it did not take action against this use, due to its noncommercial nature. The Respondent apparently acquired the disputed domain name by transfer some time in 2015 and began using it to display commercial pay-per-click advertisements, including unauthorized dairy and milk-related ads.
The Complainant sent a cease and desist letter to the Respondent in June 2016, but did not receive a reply. Thereafter, the Complainant attempted to resolve this domain name dispute with the assistance of an “internet security” firm. Those efforts at resolution were unsuccessful. This UDRP proceeding followed. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant undoubtedly has rights in its GOT MILK? mark. The Complainant is the owner of numerous trademark registrations throughout the world, including U.S. Reg. No. 1,903,870 (issued July 4, 1995) and U.S. Reg. No. 2,869,741 (issued February 25, 2003) for the words GOT MILK? for a variety of goods and services. It is among the most well-known marketing slogans in the world, having been in widespread use for many years. The disputed domain name is confusingly similar to these marks. It contains the mark in its entirety, separated by the word “pure”. This additional material (along with the generic Top-Level Domain “.com”) does nothing to meaningfully distinguish the disputed domain name from the Complainant’s mark for purposes of the Policy. Accordingly, the Panel finds in favor of the Complainant on this first element of the UDRP. B. Rights or Legitimate Interests
The Complainant will be successful under this element of the UDRP if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent.
In this case, the Complainant has made that showing, and the Respondent did not come forward with any evidence to rebut the showing. The Panel finds that (a) the Respondent’s use of the disputed domain name to link to a website containing unauthorized dairy and milk-related ads is not a bona fide offering of goods or services, (b) the Respondent has not been commonly known by the disputed domain name, and (c) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s marks.
For these reasons, the Panel finds that the Complainant has succeeded on this second element of the UDRP. C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location.”
Because the Complainant’s marks are well known, it is implausible to believe that the Respondent was not aware of those marks when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name. Bad faith use is clear from the Respondent’s activities of using the disputed domain name to establish a website displaying unauthorized pay-per-click links.
Additionally, the Respondent appears to have a history of adverse UDRP decisions. This Complaint is only the latest in a line of similar cases where the Respondent has been found registering well-known trademarks in bad faith. See, e.g., F. Hoffmann-La Roche AG v. RegistrarAds, Inc.,WIPO Case No. D2012-1645; Stichting Hanzehogeschool Groningen v. RegistrarAds, Inc.,WIPO Case No. D2011-1126; Viajes Marsans, S.A. v. RegistrarAds, Inc.,WIPO Case No. D2009-0344; and ICDAS Steel, Energy, Shipbuilding and Transport Industries Co. v. Domain Admin, RegistrarAds, Inc,WIPO Case No. D2008-1272.
This Panel agrees that the Respondent’s history of prior UDRP proceedings is further evidence of bad faith and also demonstrates that the Respondent is a serial cybersquatter.
For these reasons, the Panel finds that the Complainant has successfully met this third UDRP element. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Evan D. Brown
Presiding Panelist
Michelle Brownlee
Panelist
John C McElwaine
Panelist
Date: April 24, 2017
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